Lead decision of the Federal Patent Court on the “improper extension” of an EU patent

17. September 2018

The German Federal Patent Court has taken a lead decision on how to deal with an action for annulment against an improper extension of an EU patent. Occasion for this is the legal dispute over a patent for cigarette packaging. The patentee had subsequently changed a claim.

The origin of the ruling lies in a dispute over a European patent for cigarette packs. Patent EP 0 942 880 “Packaging of Smoking Articles” describes a cigarette box which is intended to combine the respective advantages of a rigid box (better protection of the cigarettes) and a soft box (favorable in manufacturing costs).

The proprietor of the patent has changed one of the 19 patent claims afterwards. Such a change may result in the revocation of European patents. Subsequently, the applicant requested that the patent for the territory of the Federal Republic of Germany should be annulled in its entirety.

The plaintiff relies on § 6 (1) No. 3 of the Law on International Patent Conventions, which reads as follows:

The European patent granted with effect to the Federal Republic of Germany shall be declared invalid on application if it appears that […] the subject-matter of the European patent relates to the content of the European patent application as originally filed with the authority competent for filing the application or, if the patent is based on a European divisional application or a new European patent application filed under Article 61 of the European Patent Convention, the content of the earlier application exceeds that originally filed in the filing of the application […].

The improper extension is an inadmissible acquisition of a limiting feature. An action for annulment may, as stated in § 6 (1) No. 3 IntPatÜbkG, annul a European patent for improper extension.

Lead decision in the case of an action for annulment of a cigarette packet patent

We have summarized the lead decision of the nullity senate of the BPatG in the case of the nullity action against the European patent 0 942 880:

The nullity attack for the inadmissible extension of the content of the patent application (improperextension) requires the corrective additional examination of the patentability of the defending claim – omitting the new restrictive feature. Irrespective of whether or not an infringement claim has been made in the context of the same action for annulment. The other grounds for revocation and the additional admissibility aspects should also be included.

For reasons of legal certainty, it also seems sensible to mark the improper extension in the claim by a corresponding addition (“disclaimer”). The Federal Court of Justice has already made use of this possibility in its current case-law.

The Senate of the BPatG also considers it logical that a re-examination of the inventive step may claim the priority of an earlier application.

By its action for annulment, the plaintiff submits that EP 0 942 880 should be annulled on account of an inadmissible change in the content of the application and lack of patentability (lack of novelty and lack of inventive step).

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